STATE OF SOUTH CAROLINA )
) PATENT ASSIGNMENT AGREEMENT
COUNTY OF XXXXXXXX )
THIS PATENT ASSIGNMENT AGREEMENT made this 2nd day of June, 1998, by and
between Xxxxxxx X. Xxxxxx, Xx. (hereinafter referred to as "Xxxxxx") and GEAC,
Inc., (hereinafter referred to as "GEAC").
WHEREAS, Xxxxxx is a co-owner of a patent to a golf swing training
product known as the "WonderStick" (the "Product"), and the patent to said
product was issued by the United States Patent and Trademark Office on June
25, 1996 and bears Patent Number 5,529,306 (hereinafter referred to as the
"Patent"); and
WHEREAS, Xxxxxx is desirous of transferring and/or assigning all of his
interest in and to said Patent to GEAC and GEAC is desirous of accepting said
Assignment for and in consideration of certain royalties defined herein;
NOW, THEREFORE, in consideration of Five and No/100 ($5.00) Dollars in
hand paid and the mutual covenants set forth below, the parties hereby agree
as follows:
1. Xxxxxx warrants that he is co-owner of all right, title and
interest in and to the Patent for the Product and has the right and authority
to grant, and does hereby grant, a conditional assignment of all his right,
title and interest in and to the Patent to GEAC, subject to the terms and
conditions of this Agreement.
2. In consideration of this conditional assignment, Xxxxxx shall
receive a One and No/100 ($1.00) Dollar royalty for each and every Product
sold by GEAC, nationally and internationally, including any improved or
modified versions thereof.
3. Royalty payments shall be net of returns, credit chargebacks, and
promotional giveaways (which shall include any sale of Product at a price of
Fourteen and 99/100 ($14.99) Dollars or less) and shall be paid using the
attached formula ("Schedule A").
4. GEAC shall provide Xxxxxx with sales reports, at the time royalty
payments are paid. Royalty payments to Xxxxxx shall be paid in the form of a
cashier's check by express courier.
5. Xxxxxx shall have the right to audit the books and records of GEAC
regarding sales of the Product, not more than twice a year. In this regard,
GEAC agrees to keep accurate records with respect to all sales of the Product
in such detail as to show the amounts payable to Xxxxxx under this Agreement.
Such records shall be kept at the place of business of GEAC and shall be open
to inspection at a mutually convenient time during regular business hours to a
certified public accountant for the purpose of making such inspection of such
records only.
6. Royalty payments due hereunder shall conclude with sales made
through and including December 31, 2003, and Xxxxxx shall retain no further
interest in and to the Patent thereafter; provided, however, that the patent
rights assigned by Xxxxxx hereunder shall revert to Xxxxxx effective December
31, 2003, if GEAC has not sold a total of 100,000 units of the Product by
December 31, 2003. GEAC hereby agrees to cooperate with executing the
necessary documents to reassign said patent rights to Xxxxxx within thirty
(30) days of December 31, 2003, if this minimum sales requirement is not met.
7. GEAC agrees to exercise reasonable diligence to police the golf
training product industry in an effort to determine the existence of any
infringements to Xxxxxx.
8. In the event of receivership, any bankruptcy filed by GEAC, and
any forced assignment or other financial difficulties which prevent GEAC from
complying with this Agreement in any material respect, all rights conveyed
hereunder to GEAC shall revert to Xxxxxx at its election, upon written notice
to GEAC, unless that disability is cured by GEAC within thirty (30) days
following receipt of such written notice.
9. Either party shall have the right, if it so elects, to terminate
this Agreement because of any breach or defaults by the other party in
performance of any covenant required to be performed by the defaulting party
hereunder; provided, however, that the party alleged to be in default shall be
notified in writing of such breach or default and shall have thirty (30) days
from receipt of said notice to cure the default. In addition, in the event
Xxxxxx is not paid the royalties granted hereunder, Xxxxxx shall be entitled
to immediate reassignment by GEAC of Xxxxxx'x interest in the Patent, subject
to the right to cure discussed above. Waiver of any breach or default of
another party of any of the provisions of this Agreement shall not be
construed as a continuing waiver of other breaches of the same or other
provisions. Termination, cancellation or reversion under this Agreement shall
not relieve GEAC of its obligation to pay any amounts which have accrued by
the date of such termination, cancellation, or reversion, or which may accrue
thereafter on Product already manufactured and contracted for by GEAC, and
which are subsequently sold. Termination by any party because of a specified
breach or default, shall not operate as a waiver of any remedies otherwise
available to the parties for damages caused by such breach or default.
10. GEAC shall have the right to terminate the conditional nature of
this Agreement by providing Xxxxxx written notice of its intent to terminate
the conditional nature of the Agreement and by paying to Xxxxxx the difference
between the $100,000.00 minimum royalty payment under this Agreement and the
amount of royalties actually received by Xxxxxx through the date the notice is
provided, together with an additional sum of $15,000.00. Upon Xxxxxx'x
receipt of good payment of the amount set forth in this paragraph, GEAC shall
be entitled to assign the interest in the Patent received from Xxxxxx to any
party it deems appropriate.
11. GEAC shall indemnify, defend and hold harmless Xxxxxx against and
in respect of any and all claims, demands, losses, costs, expenses,
obligations, liabilities, damages, recoveries, and deficiencies, including
interest, penalties, and reasonable attorneys fees, that Xxxxxx shall incur or
suffer, which arise, result from, or relate to any breach or failure by GEAC
to perform any of its respective representations, warranties, covenants or
guarantees under this Agreement, including, but not limited to, actions by
third parties based upon infringement, defective design, and/or manufacture,
breach of warranty (expressed or implied) and any and all product liability
actions brought against Xxxxxx.
12. Any controversy arising out of or relating to this Agreement, or
the breach thereof, shall be settled by arbitration administered by the
American Arbitration Association in accordance with its commercial arbitration
rules, and judgment on the award rendered by the arbitrator may be entered in
any court having jurisdiction thereof. The venue for any such arbitration
shall be Anderson, South Carolina and the rights of the parties hereunder
shall be construed and interpreted in accordances with the laws of the State
of South Carolina.
13. This Agreement shall be binding upon all parties hereto and their
personal representatives, heirs, successors and assigns. No party to this
Agreement shall assign any right or obligation hereunder in whole or in part
without the prior written consent of the other parties hereto, except as
provided for in paragraph 10 hereof.
14. This Agreement contains the entire agreement between Xxxxxx and
GEAC with regard to the subject matter hereof and supersedes all previous
correspondence, arrangements and understandings. Any representation, promise
or condition regarding any matter not incorporated in this Agreement shall not
be binding on any party hereto.
